Thứ Ba, 27 tháng 6, 2017

Trademark opposition
could be filed to prevent a pending application for a mark from being granted
application. Litigation is the final measure to handle dispute during trademark
protection in Vietnam.

Trademark is a sign that
help distinguish the goods or services of one enterprise from those of others.
Together with industrial design and
patent, trademark of goods and services plays an extremely important role for
the growth of the enterprise. Trademark establishes a link between enterprise
and customer. A strong trademark will attract customers to use goods or
services. When trademark is popular and economic benefits achieved through sale
of goods or provision of services coupled with trademark is large, the
violation of trademark is inevitable.

The annual reports of
the Vietnam National Office of Intellectual Property (NOIP) prove that
trademark violation in Vietnam is the most popular, among other industrial
property rights. According to the preliminary annual report in 2011, and
2012, there has been more than 1,000 cases of trademark violations each
year. Report of 2013 and after shows more than 2,000 trademark
infringements were handled with the total fines of trademark violators of
around USD 1 million per year. Having said that, it is important for
trademark owner to register
trademarks in Vietnam for better protection. This is also
suggested for even well-known trademarks.

For registration,
trademark owner has two options: either directly register trademark in Vietnam
by filling an application for registration with the Vietnam NOIP, or seek the
protection in Vietnam through Madrid’s system. For the first option, the
trademark owner needs to prepare, file for registration, and pay fee as the
requirement of Vietnam Intellectual Property law. In case trademark needs
to be protected in a number of nations, including Vietnam, trademark owner may
register trademark through Madrid’s system.

Where the violation of
trademark occurs, trademark owner needs to judge the level of infringement,
level of damage to choose suitable resolutions. Initially, the trademark
owner may protect by requiring to the trademark violator to terminate the
infringing acts, apologize, and rectify. In case of being damaged, trademark
owners have rights to claim compensation. If failing to reach result,
trademark owner may use settlement mechanism through negotiation or mediation
or could request the competent state agencies to handle acts of infringement
through i.e. filling a denunciation application and submitting to the Vietnam
NOIP. Litigation might be required to handle acts of infringement.
Generally, the proceeding of civil litigation is more complex than the
arbitration proceeding. In cases the trademark owner needs a decision from
court in order to end trademark infringement, civil litigation is top priority.
In the remaining cases, arbitration is a better choice with advantages of
cheaper cost, shorter settling time, and more flexible.

Learn more about our ANT
Lawyers Intellectual Property practice, its experience, and team members here.